James L. Ebert

Patent Trials and Appeals Board

Feb 25, 2020

14153507 - (D) (P.T.A.B. Feb. 25, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/153,507 01/13/2014 James L. Ebert PMC-038 4544
67462 7590 02/25/2020
VIVACQUA LAW, PLLC
3101 East Eisenhower Parkway
ANN ARBOR, MI 48108
EXAMINER
KOEHLER, CHRISTOPHER M
ART UNIT PAPER NUMBER
3726
MAIL DATE DELIVERY MODE
02/25/2020 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JAMES L. EBERT
____________________

Appeal 2018-002608
Application 14/153,507
Technology Center 3700
____________________

Before JOHN C. KERINS, ANNETTE R. REIMERS, and
FREDERICK C. LANEY, Administrative Patent Judges.

LANEY, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 1–7 and 21–27 (entered Feb. 28, 2017, “Non-Final
Act.”).2 We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies James L. Ebert as the real party in
interest. Appeal Br. 1.
2 Claims 8–12 were withdrawn and 13–20 have been cancelled. Id.
Appeal 2018-002608
Application 14/153,507

2
THE CLAIMED SUBJECT MATTER
Appellant’s Specification describes the invention as relating “to a
boring machine, mounting assembly and method suitable for repairing a
damaged semi-tractor or trailer axle.” Spec. ¶ 1.
Claims 1 and 21 are independent. Claim 1 is reproduced below and is
illustrative of the claimed subject matter.
1. A mounting assembly for use with axle boring
equipment comprising, in combination,
a first portion having a first front clamp and a first rear
clamp, a first pair of stanchions securing said first front clamp
and said first rear clamp together in fixed, spaced apart
relationship, said first clamps each defining first axle openings,
a pair of circumferentially spaced apart jaws secured to each of
said first clamps within said first axle openings and having faces
adapted to engage an outside surface of an axle, and a plurality
of openings in said first front clamp adapted to receive threaded
fasteners,
a second portion having a second front clamp and a second
rear clamp, a second pair of stanchions securing said second front
clamp and said second rear clamp together in fixed, spaced apart
relationship, said second clamps each defining second axle
openings, a pair of circumferentially spaced apart jaws secured
to each of second clamps within said second axle openings and
having faces adapted to engage an outside surface of an axle, and
a plurality of openings in said second front clamp adapted to
receive threaded fasteners, and
a pair of fasteners extending between said first front clamp
and said second front clamp and a pair of fasteners extending
between said first rear clamp and said second rear clamp.

Appeal 2018-002608
Application 14/153,507

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REJECTIONS3
References Basis 35 U.S.C. Claims Rejected
Smith,4 Dwileski5 § 103 1–6, 21–26
Smith, Dwileski,
Lucker 6
§ 103 7, 27

ANALYSIS
For independent claims 1 and 21, the Examiner finds that the
combined teachings of Smith and Dwileski disclose all of the recited
limitations and that a skilled artisan, at the time of the invention, would have
known to assemble the parts in the manner claimed. Non-Final Act. 2–4
(citing Smith Figs. 1–2; Dwileski Figs. 1–4). In particular, the Examiner
found Smith to disclose each recited element except “a pair of
circumferentially spaced apart jaws secured to the clamps,” which the
Examiner found alignment element 60 of Dwileski to disclose. Id. at 4. And
the Examiner found that a skilled artisan would have known to assemble the
parts as recited “in order to provide interchangeable and selectable clamping
structures to suit various materials and applications of the Smith device.” Id.
Appellant contends that “combining the alignment elements (60) of Dwileski
into the clamp members (16, 17) of Smith would, without argument, defeat a

3 The Examiner created some ambiguity by stating “[c]laim(s) 1-6 and 21-26
is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Smith,” but
then proceeded to rely on the combination of Smith and Dwileski to reject
these claims. Non-Final Act. 2, 4. Appellant, however, appropriately
recognized that the Examiner’s rejection relied on obviousness under 35
U.S.C. § 103. Appeal Br. 7–8.
4 US 3,252,192, iss. May 24, 1966 (“Smith”).
5 US 2006/0156531 A1, pub. July 20, 2006 (“Dwileski”).
6 US 2,924,128, iss. Feb. 9, 1960 (“Lucker”).
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Application 14/153,507

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primary goal of Smith: to evenly distribute clamping forces on a pipe so that
even thin wall pipe will not suffer distortion or damage.” Appeal Br. 16, 19;
see id. at 21–22. As a result, Appellant contends that the Examiner’s
reliance on the combination of Smith and Dwileski was misplaced. Id. at 16,
19, 24–25.
The Examiner disagrees that the jaws of Dwileski undermine a
primary goal of Smith to distribute clamping forces evenly on a pipe. Ans.
9. As support for this position, the Examiner provides the following
reasoning:
Dwileski is similarly concerned with evenly applying a
gripping force over a greater area to avoid pipe wall damage.
Dwileski teaches the use of gripping elements 60 (see figures
4A-F) which are formed in such a way as to apply the gripping
force over an arcuate contact surface. While Dwileski
illustrates a set screw type element 105, this element 105 does
not grip or contact the sidewalls of any pipe member, rather,
only sets a weld gap between end walls of the pipe.
Accordingly, the incorporation of the gripping elements 60 of
Dwileski into the device of Smith does not frustrate the purpose
of Smith because the gripping elements of Dwileski similarly
address the problem of damaging set screw grippers by
providing gripping elements which evenly apply the gripping
force about the pipe wall.
Id. at 9–10. Appellant contends that the Examiner’s reasoning above is
unsupported and internally inconsistent. Reply Br. 3–4.
We agree with Appellant that the rejection of independent claims 1
and 21 is flawed. The Examiner has not shown with sufficiency that a
skilled artisan would have known to modify Smith in view of Dwileski in
the manner claimed. Smith teaches that disadvantages exist with known “set
screw type elements,” which “are mounted around the pipe in a clamping
ring and are threaded into engagement with the wall of the pipe to provide
Appeal 2018-002608
Application 14/153,507

5
gripping.” Smith 1:27–30. The disadvantage with these “set screw type
elements,” according to Smith, is that “the amount of gripping provided by
each set screw element is limited when the set screw is not threaded against
the pipe with sufficient force to provide substantial distortion or damage to
the pipe wall.” Id. at 1:31–35.
Smith teaches countering this disadvantage by providing gripping of
the pipe wall “over a substantial area” that is evenly applied. Smith 1:39–
42, 1:68–2:5. Smith teaches accomplishing this by providing a clamping
apparatus “with a layer of relatively hard and relatively small particles along
the gripping surface which are embedded in an adhesive.” Id. at 1:42–45.
“The gripping is evenly distributed over a relatively large area so
substantially any axial force can be supported, even on thin walled pipe,
without destructive load concentrations on the pipe wall at any point along
the clamping surface.” Id. at 2:38–42. Smith teaches,
The very small penetrations of the shot particles into the
surface of the pipe wall do not produce any serious weakening
of the wall and do not tend to produce collapsing of the pipe
since the penetrations are extremely small and the forces are
uniformly applied around the entire circumference of the pipe.
This uniform application of pressure permits extremely high
clamping forces without producing any collapsing of the pipe
wall.
Id. at 3:41–48.
Although the Examiner recognized part 105 from Dwileski to be a
“set screw type element,” which was used to set a welding gap, the
Examiner appears to err by ignoring that element 60 is likewise a “set screw
type element.” The Examiner states that “Dwileski is similarly concerned
with evenly applying a gripping force over a greater area to avoid pipe wall
damage,” but there is no evidence provided to support this contention. Ans.
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9. Dwileski teaches mounting a plurality of elements 60 around the pipe in a
clamping ring and threading them into engagement with the wall of the pipe
to secure the pipe within the jaws 21 and 22. Dwileski ¶¶ 44, 62. Dwileski
describes using an iterative process to apply pressure, secure, and axially
align the pipe within the jaws. Id. ¶¶ 63, 72, 80. As such, Dwileski’s
element 60 appears to be the exact type of part (i.e., a “set screw type
element”) that Smith would discourage a skilled artisan from using to
modify its disclosed apparatus. In addition, elements 60 of Dwileski would
cause the securing forces to be concentrated into the relatively small areas
defined by elements 60, rather than the desired evenly distributed forces
over a relatively large area defined by jaws 21 and 22 that Smith suggests to
be an important objective for its apparatus. Given these facts, we are not
persuaded the Examiner has shown independent claims 1 and 21 would have
been obvious in view of Smith and Dwileski.
Therefore, because the Examiner’s determination that claims 1 and 21
are unpatentable is flawed and the remaining claims all depend therefrom,
we do not sustain the Examiner’s rejections of claims 1–7 and 21–27.

DECISION
The Examiner’s rejections of claims 1–7 and 21–27 are reversed.
In summary:

Appeal 2018-002608
Application 14/153,507

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Claims
Rejected
Basis
35 U.S.C.
Reference(s) Affirmed Reversed
1–6, 21–
26
§ 103 Smith, Dwileski 1–6, 21–26
7, 27 § 103 Smith, Dwileski, Lucker 7, 27
Overall
Outcome
1–7, 21–27

REVERSED